Re: Study Finds Bias in Internet domain name dispute resolution

Re: Study Finds Bias in Internet domain name dispute resolution

From: Meliza Smith <smithm§callawrie.com.au>
Date: Tue, 14 Nov 2000 16:23:20 +1100
Hi list members,

JUST A FEW NIT-PICKING CORRECTIONS:

> Passing off is a common law action. It is has very little to do with trade
> marks. Trade mark infringement is based on s62(1) of the Act, to wit:

Section 62 including 62(1) are the infringement provisions of the OLD Trade
Marks Act 1955, which is no longer in force. The infringement provisions in
the Trade Marks Act 1995 Act (the current act) are contained in Section 120.

You are correct in saying that passing off is a common law action, but
incorrect in saying it has little to do with trade marks - it is where trade
mark law all began! Passing off actions and Trade Practices Act actions
quite often run in tandem with trade mark infringement actions.

> - not engaging in trade
> - staying well clear of any goods or services covered under the trademark.
>
> Anyone is allowed to open "Apple Drycleaning" but "Apple Electronics"
would
> fall foul of Apple Computer's trade mark.

Section 120(3) states that a person infringes a registered trade mark if the
trade mark is well known in Australia EVEN IF the goods are not goods of the
same description or closely related services. So people DO have to be
careful re: unrelated goods - remember the recent VIRGIN debacle?
Additionally, the use of the trade mark under the new Act doesn't have to be
"in the course of trade", just "as a trade mark". Interesting difference.

> Again we have a legal system content that analogies to existing law will
> suffice for almost any situation.

> Perhaps someone on this list with more direct involvement in the legal
> system than I, could comment on what remedies are available under
Australian
> law.

Has any new legal situation been created by the Internet? I think the issues
surrounding domain names, cybersquatting, etc all involve 'traditional'
problems such as passing off, fair trading breaches, copyright breaches -
and yes, even trade mark infringement.

Can you suggest an alternative system/s to the system of legal precedent,
where the facts of like cases are considered in the light of the present
problem?

> The problem is of course that domain names on their own carry little
> information about the goods or services.

Many domain names, like kelloggs.com, dolby.com, nike.com DO carry
information about the goods or services being offered at that Internet site.
Use by people other than the proprietors of the trade marks could
potentially be trade mark infringement under Section 120(3).

Meliza Smith



----- Original Message -----
From: "Aristedes Maniatis" <ari&#167;ish.com.au>
To: <dns&#167;auda.org.au>
Sent: Tuesday, 14 November 2000 3:20 PM
Subject: Re: Study Finds Bias in Internet domain name dispute resolution


> on 14/11/00 1:04 PM, Patrick Corliss at patrick&#167;quad.net.au wrote:
>
> > But if I buy all the valuable works of Picasso then I am an art
collector or
> > an
> > investor.  I am not a blackmailer as I am not forcing anybody to buy
them off
> > of
> > me.  Sometimes these overarching laws lead off in very funny places.
> >
> > And even if I did ring up Picasso and said "I've acquired some of your
> > paintings
> > legitimately, do you want to buy them back?" that's hardly a crime.
>
>
> That's the real problem with analogies. They don't always work. Our legal
> system is based on a concept of trying to compare a current situation with
> what has gone in the past or with something the court considers similar
> (precendent). In the case of domain names, there are very few precedents
> which add value to the discussion.
>
> We would all agree that cybersquatting is more like blackmail than it is
art
> collection. But it isn't quite the same as stealing Microsoft's source
code
> and then asking for a reward to keep it secret (hypothetically).
>
> >
> > As I understand trademark law, the problem is in "passing off" and
"dilution"
> > of
> > the mark.  And isn't that actionable in common law -- you can sue?
>
> Passing off is a common law action. It is has very little to do with trade
> marks. Trade mark infringement is based on s62(1) of the Act, to wit:
>
> Where someone else "uses a mark which is substantially identical with, or
> deceptively similar to, the trade mark, in the course of trade, in
relation
> to goods or services in respect of which the trade mark is registered."
>
>
> Clearly is it easy to side step any trade mark issues by the
cybersquatter:
>
> - not engaging in trade
> - staying well clear of any goods or services covered under the trademark.
>
> Anyone is allowed to open "Apple Drycleaning" but "Apple Electronics"
would
> fall foul of Apple Computer's trade mark.
>
>
> The problem is of course that domain names on their own carry little
> information about the goods or services. The web page, ftp site, or
whatever
> would carry that information and a cybersquatter is just not going to be
> silly enough to put up information directly infringing a trade mark. So
how
> do you go about proving trade mark infringement purely from the
registration
> of a domain name?
>
> Personally I cannot see what IP rights there are over domain names.
Passing
> off should be as easy to avoid as a trademark, and copyright just doesn't
> fit.
>
> Again we have a legal system content that analogies to existing law will
> suffice for almost any situation.
>
> There have been some large cases recently in the US, but information in
the
> press revolves more around the size of the settlement than the issues.
> Perhaps someone on this list with more direct involvement in the legal
> system than I, could comment on what remedies are available under
Australian
> law.
>
> Ari Maniatis
>
> >
> > The study found there was bias in internet domain resolution.  Funny how
you
> > want to tilt the bias even further in favour of big business trademark
owners
> > !!
> >
> > Best regards
> > Patrick Corliss
> >
> >
> > ----- Original Message -----
> > From: Rothnie, Warwick <Warwick.Rothnie&#167;msj.com.au>
> > To: <dns&#167;auda.org.au>
> > Sent: Tuesday, November 14, 2000 9:01 AM
> > Subject: RE: [DNS] Study Finds Bias in Internet domain name dispute
resolution
> >
> >
> >> Mallesons Stephen Jaques
> >> Confidential communication
> >>
> >>> Mueller's report calls for allowing the businesses that sell domain
name
> >> registrations, rather than challengers or domain >name registrants, to
> >> choose an arbitrator.
> >>
> >> Now that would be a great idea: put the mice in charge of looking after
the
> >> cheese and the fox in charge of the henhouse!
> >>
> >> What we should really do is introduce an anti-cybersquatter law
modelled on
> >> the US one with statutory damages (one case recently awarded $500,000)
and
> >> cybersquatters would start to realise that blackmail has consequences.
> >>
> >> Warwick A Rothnie
> >> Partner
> >> Mallesons Stephen Jaques Melbourne
> >> Direct line (61 3) 9643 4254
> >> Fax (61 3) 9643 5999
> >>
> >>
> >> -----Original Message-----
> >> From: David.Goldstein&#167;sbg.nic.at [mailto:David.Goldstein§sbg.nic.at]
> >> Sent: Tuesday, 14 November 2000 3:35:AM
> >> To: dns&#167;auda.org.au
> >> Subject: [DNS] Study Finds Bias in Internet domain name dispute
> >> resolution
> >>
> >>
> >> I came across this article today and it might interest those on this
list.
> >>
> >> Cheers
> >> David
> >>
> >> Study Finds Bias in Internet domain name dispute resolution
> >>  (Convergence Center, Syracuse University news release) 9Nov
> >>  http://dcc.syr.edu/udrpnews.htm
> >> The international method of resolving disputes over Internet domain
names
> >> favors trademark holders over those seeking to register an Internet
site,
> >> according to a study by researchers at Syracuse University's School of
> >> Information Studies. The study was released Nov. 9 by the school's
> >> Convergence Center. While the guidelines developed by ICANN are "robust
and
> >> fair," both the interpretation of the guidelines and a clause that
allows
> >> trademark holders to shop around for the most favorable arbitrators has
> >> resulted in a system that is biased against Internet domain name
> >> registrants, says Milton Mueller, professor and director of the
Convergence
> >> Center.
> >>
> >> The report 'Rough Justice' is available in both html and pdf versions.
See
> >> http://dcc.syr.edu/roughjustice.htm or
http://dcc.syr.edu/roughjustice.pdf
> >>
> >
> >
> > --
> > This article is not to be reproduced or quoted beyond this forum without
> > express permission of the author.  You don't know who really wrote it.
> > 364 subscribers. Archived at http://lists.waia.asn.au/list/dns (dns/dns)
> > Email "unsubscribe" to dns-request&#167;auda.org.au to be removed.
> >
>
>
>
> -------------------------->
> ish group pty ltd
> 7 Darghan St Glebe 2037 Australia
> phone +61 2 9660 1400   fax +61 2 9660 7400
> email info&#167;ish.com.au
> PGP fingerprint 08 57 20 4B 80 69 59 E2  A9 BF 2D 48 C2 20 0C C8
>
> --
> This article is not to be reproduced or quoted beyond this forum without
> express permission of the author.  You don't know who really wrote it.
> 364 subscribers. Archived at http://lists.waia.asn.au/list/dns (dns/dns)
> Email "unsubscribe" to dns-request&#167;auda.org.au to be removed.
Received on Tue Nov 14 2000 - 13:22:41 UTC

This archive was generated by hypermail 2.3.0 : Sun Nov 23 2014 - 16:00:07 UTC